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Malta Patents / License

Patent Licenses in Malta

A patent application or patent may be licensed in whole or in part.
A licence may be exclusive or non-exclusive and has to be recorded in the Maltese Patent Register.

Requirements

Filing requirements for the recordal of a licence in Malta:

  1. The Power of Attorney;
  2. The Deed of Assignment;

Power of Attorney (POA)

For the recordal of a licence our Power of Attorney has to be signed by the licensor.

  • A notarisation of the POA is required;
  • The original POA is required before the recordal of a licence will be filed with the Malta IPO;
There is no need of a POA from the licensee unless the cancellation of the recordal of a licence is requested.
In this case a notarised POA is required from both parties.

License Contract

The License Contract has to be provided in English and in written form and shall be signed by the parties to the contract. It has to contain the particulars of the licensor, the particulars of the licensee and has to indicate the number of the patent concerned (patent number which was issued by the Malta IPO on the "Certificate of Registration"). It also has to indicate a date, which could be the signing date of the document.
A further requirement is one of the following:

  • The notarisation of the document (signatures) or
  • The legalization by a diplomatic or consular representative of Malta or
  • The Apostille according to the Hague Convention

A licence contract shall in pain of nullity be made in writing and shall be signed by the parties to the contract.

Definition of Licence Contract

"Licence Contract" means any contract by the licensor allowing the licensee to perform any of the acts in respect of an invention claimed in a patent or a patent application according to Article 27 of the Malta Patents and Designs Act - A summary:

Where the patent concerns a product:   Where the patent concerns a process:
     
Preventing third parties from performing, without authorisation, the

  • making of a product incorporating the patent;
  • offering or the putting on the market of a product incorporating the patent, the use of such product, or the importation or stocking of such product for such offering or putting on the market or for such use;
  Preventing third parties from performing, without authorisation, the:

  • use of a process which is the subject matter of the patent;
  • in respect of any product directly obtained by the use of the process, offering or the putting on the market of a product incorporating the patent, the use of such product, or the importation or stocking of such product for such offering or putting on the market or for such use, even where a patent cannot be obtained for the said product;
In both cases (product and process) the licensee has the right to prevent third parties from inducing of third parties to perform any of the above acts.
   The above list is not comprehensive.

Rights of Licensor and Licensee

Licensor - In the absence of any provision to the contrary in the licence contract, the licensor may allow a third person to perform in respect of the invention any of the acts referred to in Article 27 of the Malta Patents and Designs Act and shall not be prevented from performing them himself.
If the licence contract provides that the licence is exclusive, and unless it is expressly provided otherwise in the licence contract, the licensor may neither allow a third party to perform nor perform himself in respect of the invention any of the acts referred to in Article 27 of the Malta Patents and Designs Act which are covered by the said contract.

Licensee - In the absence of any provision to the contrary in the licence contract, the agreement given by the licensor to the licensee shall extend to the performance in respect of the invention of all the acts referred to in Article 27 of the Malta Patents and Designs Act without limitation as to time, in the entire territory of Malta, and through any application of the invention.
In the absence of any provisions to the contrary in the licence contract, the licensee may not allow a third person to perform in respect of the invention any of the acts referred to in Article 27 of the Malta Patents and Designs Act.